Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 1-11 are pending.
Election/Restrictions
Applicant's election with traverse of the invention of Group III, claims 10 and 11, in the reply filed on 12/5/25 is acknowledged.
The traversal is on the ground that Pressly lists proteins, amino acids, hydrolyzed proteins and polyols as optional excipients among many other options. This is not found persuasive because it would have been obvious to one of ordinary skill in the art to have selected any of the ingredients recited in Pressly, including the claimed components, because “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004) (MPEP 2145 D).
In addition, the MPEP sections cited by Applicant regarding independent and distinct analysis pertain to applications filed under 35 U.S.C. 111 and not National Stage applications submitted Under 35 U.S.C. 371, which rely on Unity of invention practice under 37 CFR 1.499 (see MPEP 823). The groups of Inventions lack unity of invention because even though the inventions of these groups require the technical feature of 0.1% to 30% by mass of at least one bifunctional α,β-unsaturated compound and its derivatives, and 2% to 60% by mass of crosslinking agent, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Pressly et al.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-9 are withdrawn as being drawn to a nonelected invention.
Claims 10 and 11 are under consideration.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 10/12/23. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Specification
The abstract of the disclosure is objected to because it contains legal phraseology (said). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 10 recites “ii) from 2% to 60% by mass of crosslinking agent” followed by “1% to 40% by mass is a non-ionic crosslinking agent selected from…” and “1% to 20% by mass is an ionic crosslinking agent selected from…”. The amount of “a” and “b” are unclear because the claim does not recite what total they are based on. For example, it is unclear if “i” comprises 1-40% by mass of “a” or if the hair composition as a whole comprises 1-40% by mass of “a”. Accordingly, the metes and bounds of the claim are unclear. For the purpose of examination all concentrations will be understood as being based on the total hair composition.
Claim 11 is rejected as depending from and not clarifying claim 10.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Manneck et al. (US 2017/0165161).
Manneck et al. teach compositions and methods for oxidatively coloring or blonding hair which is gentle on the hair (e.g. abstract).
Manneck et al. teach a hair treatment method comprising applying a hair composition to the hair (e.g. paragraph 0319). Manneck et al. teach that color crémes 1 and 2 according to Table 4 were each mixed with one of the oxidative treatment agents from Tables 1, 2 or 3 in a weight ratio of 1:1 and applied directly to human hair (e.g. paragraph 0319). The combination of color créme 1 and oxidative treatment in Table 2 results in:
i) from 0.5 wt% maleic acid (i.e. bifunctional α,β-unsaturated compound);
ii) a) 3.0 wt% propylene glycol (i.e. a polyol);
b) 0.2 wt% arginine (i.e. amino acid) (i.e. totaling 3.2 wt% crosslinking agent); and
iii) water q.s. 100% (e.g. paragraph 0318).
While the exemplified amount of amino acid is below the claimed range of 1-20 wt%, Manneck et al. more broadly teach the inclusion of 0.05-3 wt% of amino acids (e.g. paragraph 0086, Claim 8).
Regarding Claim 10, it would have been obvious to one of ordinary skill in the art at the time of filing to select an amount of arginine to be 0.05-3 wt%, which overlaps with the claimed range of 1-20 wt%, in order to optimize the resulting product. It is obvious to optimize within prior art conditions or through routine experimentation. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 11, the hair composition is applied during a hair dyeing or blonding process (e.g. paragraphs 0001, 0319).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619